Tuesday, April 08, 2014

Petitioner SARL Corexco moved for summary judgment in this proceeding seeking cancellation of a registration for the mark BEARWW for "Internet based social networking and introduction services ...." Corexco claimed likelihood of confusion with its registered mark BEARWWW for "online social networking services," and further claimed that the application for the challenged registration was void ab initio because the original applicant (Respondent Webid's predecessor-in-interest) did not own a foreign registration which could have served as a Section 44(e) basis for issuance of the registration. The Board summarily granted the petition on the second ground. SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587 (TTAB 2014) [precedential].

Webid's Effective Admissions: Corexco's summary judgment motion hinged in part on Applicant Webid's effective admissions resulting from its failure to timely respond to Corexco's admission requests. Webid filed a cross-motion for leave to substitute its actual (belated) responses to petitioner’s requests. Webid pointed out that the parties were discussing settlement at the time Webid served its responses four days late. The Board exercised its discretion under FRCP 36(b) to allow Webid to substitute its responses to the requests for admission for the effective admissions.

Clearly, the parties’ settlement discussions contributed to the respondent’s delay in timely serving its answers. As noted above, there is a two-prong test for allowing withdrawal or amendment of admissions: The presentation of the merits of the action will be subserved thereby, and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action on the merits.

The Board concluded that the merits of the action will be subserved by allowing the amendment, since the effective admissions largely formed the basis for petitioner’s motion for summary
judgment. And Corexco will suffer no recognizable prejudice, since the case was still in the pre-trial stage and any potential prejudice could be mitigated by extending the discovery period.

Likelihood of Confusion: Corexco's motion for summary judgment on the ground of likelihood of confusion was based solely on Webid's admissions by default. Because Webid's responses were deemed amended, the Board denied the motion as to the Section 2(d) claim.

Lack of Proper Section 44(d) Basis: The original applicant (Respondent’s predecessor-in-interest, Ms. Leclercq), filed an application to register the BEARWW mark under Section 1(a) of the Trademark Act. On August 11, 2011, she amended the filing basis to Section 44(e), relying on a Canadian registration for the mark.

In Webid's amended admission responses, however, it admitted that Ms.Leclercq never owned the Canadian registration, that on August 11, 2011, Webid was the owner of the Canadian registration, and that on that date Webid was not the owner of the U.S. trademark application.The Board pointed out that:

If an application is filed based on Section 1(a) or Section 1(b), and the applicant later amends the application to add or substitute Section 44 as a basis, the applicant must be the owner of the foreign application or registration as of the filing date of the amendment adding or substituting a Section 44 claim of priority or basis for registration.

Webid admitted that Ms. Leclercq was not the owner of the Canadian registration at the time the amendment was made to the Section 44(e)basis. Therefore the application was deemed void ab initio, and the Board granted Corexco's motion for summary judgment on that ground.

TTABlog note: I found the Board's reasoning and citations on the last issue to be very difficult to follow. Is this a case of first impression? I think it is, but it's hard to tell from the confusing citations. The Board cites to Rule 35(b)(1) as if it covered the situation, but that rule doesn't say much of anything.

What is the significance, if any, of the fact that Ms. LeClercq did not own the Canadian registration at the time the challenged registration issued? If she had owned it then, would that have solved the problem or would the application still have been void ab initio?

I found particularly unhelpful the use of the "cf." citation signal on pages 8 and 9 without adequate explanation of what point was being made.